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IN THE HIGH COURT OF DELHI AT NEW DELHI
AMIT BANSAL , J.
Oracle America, inc. - Petitioner
versus
Mr. Sandeep Khandelwal And Anr – Respondent
C.O. (COMM.IPD-TM) 121 of 2024 with I.A. 34109 of 2024 & I.A. 34110 of 2024
Decided on : 03-02-2025
JUDGMENT :
AMIT BANSAL, J.
1. The present rectification petition has been filed under Sections 47 and 57 of the Trade Marks Act, 1999 (hereinafter ‘the Act’) seeking cancellation of the registration of the trade mark bearing registration no. 5420304 in Class 41 in the name of the respondent no.1 (hereinafter ‘impugned mark’), who filed the application for registration on 22nd April, 2022 and was granted registration on 10th July, 2023.
2. Notice in the application for ad interim stay on the operation of the impugned registration was issued and was accepted on behalf of the respondents in court on 1st August, 2024.
3. Vide the order dated 1st August, 2024, when the respondent no.1 was present through counsel, the court also directed that a status quo be maintained qua the impugned mark and the respondent no.1 was granted four weeks to file a reply to the aforesaid application, which expired on 29th August, 2024. No reply to the present petition or the aforesaid application on behalf of the respondent no.1 has been filed till date.
4. There was no appearance on behalf of the respondent no.1 on the previous date of hearing and none appears on his behalf even today.
BRIEF FACTS
5. Brief facts relevant for adjudicating the present petition are set out below:
5.1. The petitioner, a corporation incorporated and existing under the laws of California, United States of America, is a subsidiary of Oracle Corporation. Oracle Corporation operates in India through its other subsidiary, Oracle India Private Limited, which has its registered address in New Delhi. The aforesaid entities are hereinafter collectively referred to as the ‘Petitioner Group’.
5.2. The petitioner group operates in over 175 countries and is a leading developer of enterprise and internet-based products and technologies including computer hardware, software and other related products and its customers include the Fortune 100 companies. The petitioner’s parent company Oracle Corporation is an approximately USD 50 billion software and technology concern.
5.3. The petitioner group, through its predecessor Sun Microsystems, Inc., adopted and commenced using JAVA as a trade mark in connection with computer software and related services in 1996. The mark JAVA is used by the petitioner group both on a standalone basis or in a combined manner with other prefix/ suffix including the mark JAVASCRIPT in India.
5.4. The petitioner group currently offers some of the most widely sold software products and services for application development and deployment under the mark JAVA. Among its many JAVA-branded offerings, the petitioner group provides a series of JAVA training and certification courses around the world including online courses accessible by users in India. After completion of the requisite courses, users are able to become Oracle-certified JAVA developers.
5.5. The products and services of the petitioner group under the JAVA marks enjoy a global reputation and are available across the world including in India with sales running into several millions of dollars annually.
5.6. The petitioner’s parent company also owns and maintains a dedicated website, accessible at www.java.com, which domain was registered on 6th June 1996. The aforesaid website can be accessed from across the world including in India at https://www.oracle.com/in/java/.
5.7. The petitioner’s JAVA marks have been used in India since the 1990s, originally through its aforesaid predecessor. Therefore, the relevant class of consumers and members of trade in India are extremely familiar with the JAVA marks and the petitioner groups’ products and services thereunder.
5.8. The petitioner is the registered proprietor of the mark JAVA and other JAVA-formative marks, including the mark JAVASCRIPT, in India, a list of which has been provided in paragraph no. 11.12 of the petition.
5.9. The petitioner owns registrations for the JAVA marks in various classes in several other countries including but not limited to the USA, Canada, Mexico
The registration of a trade mark that is identical or similar to an existing mark is liable to be cancelled if it is likely to cause confusion among consumers.
Registration of a trademark may be cancelled if it is found to be deceptively similar to a prior registered mark and has not been used for five years, reflecting both private and public interest.
The central legal point established in the judgment is the application of Section 11(1)(b) of the Trademarks Act to determine the likelihood of confusion based on phonetic similarity and the priority....
Prior use and distinctiveness of a trademark override subsequent registrations, establishing a likelihood of consumer confusion in trademark disputes.
The central legal point established in the judgment is the requirement for distinctiveness of a mark for registration under Section 9(1)(a) of the Trade Marks Act, and the need for the Registrar to p....
A trade mark recognized as well-known under the Trade Marks Act is protected against concurrent use by others regardless of the class of goods, particularly when evidence of rightful prior use and bo....
Prior adoption and user rights establish entitlement to trademark protection, and their absence undermines claims for rectification, regardless of phonetic similarity.
Registration validity sustained if distinctiveness established over time despite claims of descriptiveness.
The main legal point established in the judgment is that a rectification petition seeking removal of a device mark from the register of trade marks must establish a fresh cause of action for rectific....
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